DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election in the reply filed on 10 September 2025, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicants provided a compliant species election of: “propylene oxide” as a species of “epoxide compound”; “
PNG
media_image1.png
430
316
media_image1.png
Greyscale
“ as a species of “heterogeneous catalyst”; and “propylene carbonate” as a species of “liquid cyclic carbonate product”.
The Examiner did not find prior art for the elected species.
Examiner extended the Markush search to the full scope of instant claim 1 but did not find any prior art.
Therefore, the Election of Species Requirement of 6 August 2025, is withdrawn, since all claims are free of the prior art.
All claims have been examined on the merits.
Current Status of 18/031,229
This Office Action is responsive to the amended claims of 10 September 2025.
Previously presented claims 1-17 have been examined on the merits.
Priority
The effective filing date is 12 November 2020.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 April 2023, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claim 1 contains the word “process” and a stated objective: “to continuously react a gaseous mixture of an epoxide and carbon dioxide in the presence of a heterogeneous catalyst” to produce “a liquid cyclic carbonate” product. However, there are no active verbs (gerund/”-ing” ending words) delineating active/affirmative steps needed to conduct the stated objectives. Thus, this renders the metes and bounds of the claim undefined (hence rendering claim 1 indefinite).
Claims 2-17 are similarly rejected as indefinite since these claims refer back to claim 1 but do not remedy the rationale underpinning the basis for rejecting claim 1.
To remedy this rejection: please add the active verbs/affirmative steps needed to conduct the stated objectives, above.
Claim 2 recites the limitation "the injector". There is insufficient antecedent basis for this limitation in the claim.
The “injector” of claim 2 renders the metes and bounds of claim 2 undefined (hence rendering claim 2 indefinite) since the artisan is not certain where antecedent basis can be found for “injector” of claim 2. Is this the same thing as “ejector” of claim 1? If so, why not refer to it consistently?
To remedy this rejection: please revise claim 2 to: -- the ejector [[injector]] -- .
Conclusion
No claims are presently allowable as written.
There is no known prior art reference that either teaches or anticipates a method of instant claim 1.
The reference VERGUNST (WO 2019/125151 A1, provided by Applicants and referenced in IDS of 11 April 2023), discloses a process to continuously prepare a cyclic carbonate differing from the process as presently claimed in that no use is made of an ejector of the gaseous mixture of an epoxide compound and carbon dioxide having a pressure which is at least more than 0.3 MPa higher than the pressure of the gaseous effluent.
The reference NORTH (EP 2257559, provided by Applicants and referenced in IDS of 11 April 2023), discloses a process for continuously preparing a cyclic carbonate in a tubular reactor. There is no mention of pressure differences.
The reference OSAKI (U.S. 2017/0197931 A1, provided by Applicants and referenced in IDS of 11 April 2023), discloses a process to continuously prepare a cyclic carbonate differing from the process as presently claimed in that no use is made of an ejector of the gaseous mixture of an epoxide compound and carbon dioxide having a pressure which is at least more than 0.3 MPa higher than the pressure of the gaseous effluent.
Furthermore, there is no known rationale (and no known prior art reference providing said rationale) to modify any of the teachings of any one of VERGUNST, NORTH, or OSAKI references, or combination(s) thereof, to arrive at the method of instant claim 1. In fact, Applicants cite surprising/unexpected results in their disclosure of comparative example A and example 1 (see pages 13-14 of the instant Specification) that the process of the instant claims consume less energy than processes known in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625